Ex Parte Shih et al

Board of Patent Appeals and Interferences

Jun 18, 2009

10628181 (B.P.A.I. Jun. 18, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________

Ex parte MIN-YI SHIH
and THOMAS BERT GORCZYCA
______________

Appeal 2008-005870
Application 10/628,181
Technology Center 1700
_______________

Decided:1 June 18, 2009
_______________

Before CHARLES F. WARREN, PETER F. KRATZ, and
CATHERINE Q. TIMM, Administrative Patent Judges.

WARREN, Administrative Patent Judge.

DECISION ON APPEAL
Applicants appeal to the Board from the decision of the Primary
Examiner finally rejecting claims 1 through 8, 10, 11, and 13 through 32 in

1 The two month time period for filing an appeal or commencing a civil
action specified in 37 C.F.R. § 1.304, begins to run from the Decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2008-005870
Application 10/628,181
the Office Action mailed August 22, 2007. 35 U.S.C. §§ 6 and 134(a)
(2002); 37 C.F.R. § 41.31(a) (2007).
We reverse the decision of the Primary Examiner.
Claim 1 illustrates Appellants’ invention of a method of forming a
wave guide, and is representative of the claims on appeal:
1. A method of forming a waveguide comprising a core region, a
cladding region, and an index contrast region situated therebetween, the
method comprising:
depositing a polymerizable composite on a substrate to form a layer,
wherein the polymerizable composite comprises a polymer binder and an
uncured monomer,
patterning the layer to define an exposed area and an unexposed area
of the layer in a manner such that the unexposed area includes the core
region,
irradiating the exposed area of the layer to polymerize the
polymerizable composite in the exposed area, and
volatilizing the uncured monomer in the unexposed area by baking
and by diffusing some uncured monomer from the unexposed area towards
the exposed area to form the index contrast region of the waveguide.
The Examiner relies upon the evidence in these references (Ans. 3):
Chandross US 3, 809,732 May 7, 1974
Suzuki US 4,877,717 Oct. 31, 1989
Nishimura US 6,828,078 B2 Dec. 7, 2004
Appellants request review of the ground of rejection under 35 U.S.C.
§ 103(a) advanced on appeal by the Examiner: appealed claims 1 through 8,
10, 11, and 13 through 32 over Suzuki or Chandross in view of Nishimura.
Br. 3; Ans. 4.
Appellants’ arguments are based on independent claims 1 and 16. Br.
4 and 6. Thus, we decide this appeal based on these claims. 37 C.F.R.
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Application 10/628,181
§ 41.37(c)(1)(vii) (2007).
Issue
The issue in this appeal is whether Appellants have shown that that
the evidence in the combined teachings of Chandross, Suzuki, and
Nishimura does not support the Examiner’s conclusion of prima facie
obviousness with respect to the claimed methods encompassed by claims
1 and 16.
Claim Interpretation
In order to consider the issues raised in this appeal, we first interpret
independent claims 1 and 16 by giving the terms thereof the broadest
reasonable interpretation in their ordinary usage in context as they would be
understood by one of ordinary skill in the art in light of the written
description in the Specification unless another meaning is intended by
Appellants as established therein, and without reading into the claim any
disclosed limitation or particular embodiment. See, e.g., In re ICON Health
and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007); In re Am. Acad. of
Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004), and cases cited
therein; In re Morris, 127 F.3d 1048, 1054-55 (Fed. Cir. 1997).
We determine that claims 1 and 16 specify, in pertinent part, a method
comprising at least the steps of, among other things, patterning a layer of
polymerizable composite comprising a polymer binder and an uncured
monomer on a substrate such that the unexposed area includes the core
region of the wave guide, and after irradiating the exposed area of the layer,
volatilizing the uncured monomer in the unexposed area by baking to diffuse
some uncured monomer from the unexposed area towards the exposed area
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to form the index contrast region between the core region and the cladding
region of the waveguide.
Findings of Fact
We find Chandross would have disclosed to one of ordinary skill in
this art, as illustrated by embodiments depicted in Figures 2C-D, a method
of forming, among other things, a waveguide including the steps of
depositing a polymer film with a higher index photosensitive monomer on a
substrate, irradiating an area of the layer to form the core region, and heating
the construct to evaporate the remaining unexposed dopant. Chandross, e.g.,
abstract, col. 2, ll. 35-62; col. 3, l. 39 to col. 6, l. 7, and
col. 8, l. 72 to col. 9, l. 17. Chandross characterizes the method as “‘photo-
locking’” wherein
[t]he dopant monomer is selected so that it is moderately
volatile and undergoes molecular structural change upon
exposure to radiation . . . [and] attaches to the polymer of the
film, dimerizes or polymerizes upon selective irradiation . . .
resulting in substantial reductions or even complete elimination
of the mobility and volatility of the dopant in the polymer
matrix. Selected portions of the higher index dopant are thus
photochemically locked in the polymer film. Simple heating is
then employed to evaporate the remaining unexposed dopant.
The heating step leaves the exposed dopant material in position
in the film and has two consequences: first, the refractive index
of the exposed area of the sample is intermediate between that
of the starting polymer sample and that of the dopant monomer
itself; and, secondly, the thickness of the polymer film in the
unexposed areas of the sample is reduced due to the removal of
the unexposed dopant.
Chandross col. 2, ll. 35-39 and 44-62; see also col. 3, ll. 39-55, col. 4,
ll. 27-32, col. 5, ll. 41-52, col. 5, l. 66 to col. 6, l. 7, col. 8, l. 74 to col. 9,
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l. 17, and Figs. 2C-D. Chandross discloses particular dopants and polymers
which provide the “photo-locking.” Chandross col. 6, l. 32 to col. 8, l. 71,
and col. 9, ll. 1-11.
We find Suzuki would have disclosed to one of ordinary skill in this
art a method of forming an optical element, such as a waveguide, including
the steps of
forming on a substrate a light-sensitive film containing at least a
photoreactive compound capable of causing a migration of
unreacted compound from an unexposed area to an exposed
area as an exposure function, thereby changing a configuration
of exposed light-sensitive film, and
selectively exposing the light-sensitive film to obtain an optical
element having a desired configuration.
Suzuki col. 2, ll. 59-68; see also, e.g., col. 4, ll. 21-34. Suzuki discloses
particular “photoreactive compounds are those which are capable of
inducing polymerization, cross-linking, isomerization or other
photoreactions” and provide “migration.” Suzuki, e.g., col. 4, l. 35 to col. 8,
l. 55. The exposed film can be stabilized by “treatment of the film with heat
. . . to remove the unreacted photoreactive compounds from the film by
evaporation.” Suzuki col. 8, ll. 56-66. Suzuki illustrates the method with a
mechanism for formation of lens, illustrated in Figures 7 and 8, wherein
[d]uring exposure, the monomers M in the unexposed area
permeate or migrate into the exposed area, and in the exposed
area, as a result of photopolymerization caused by the exposure,
polymers with a low polymerization degree (LPD-P) and
polymers with a high polymerization degree (HPD-P) are
concurrently produced. This stage . . . described . . . [in] FIG. 8,
showing an interfacial area 5 between the exposed and
unexposed areas of the light-sensitive film 2. In the interfacial
area 5, the binding polymers BP are rich and the monomers M
5
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are poor. Accordingly, and since the area 5 is harder than other
portions of the film 2, the area 5 acts as a “semipermeable
membrane.” The monomers M diffuse in each of the exposed
and unexposed areas, and, as shown by the arrows M, permeate
from the unexposed area through the interfacial area or
semipermeable membrane to the exposed area due to an
osmotic pressure created between the two areas. . . . In the
exposed area, polymerization of the monomers M occurs, and
thus the amount of the polymers HPD-P, LPD-P, and B is
gradually increased. . . .
After exposure, the binding polymers BP and a small
amount of the monomers M remain in the unexposed area. On
the other hand, polymers HPD-P, the monomers M, and the
binding polymers BP remain in the exposed area. The
monomers M, i.e., unreacted compounds in this area can be
removed from the film by heat treatment. . . .
Suzuki col. 10, l. 23 to col. 11, l. 32. We find one of ordinary skill in this art
would observe in Figure 8 a significant increase in the amount of material in
the exposed area, swelling that area.
Suzuki further discloses an optical waveguide embodiment, illustrated
in Figure 24, which is formed by exposing an area causing it to swell, thus
forming the core region. Suzuki, col. 18, ll. 2-49, and Figs. 20A-B.
We find Nishimura would have disclosed to one of ordinary skill in
this art a method of forming an optical element, such as a waveguide,
including the steps of, among other things, applying a refractive index
changing composition to a substrate, exposing patterned areas of the
substrate to irradiation and heating “to make a refractive index difference
between exposed and unexposed portions of the refractive index changing
composition” layer. Nishimura, e.g., col. 34, ll. 16-31. Nishimura illustrates
the method with respect to waveguides in an embodiment wherein a
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refractive index changing composition is applied to a lower clad film layer
on a substrate, shielding the core region with a photomask which exposes the
side clad region of the layer, irradiating the exposed side clad region, and
baking the construct. Nishimura col. 40, l. 49 to col. 41, l. 26.
Nishimura discloses particular compounds which are used to form the
refractive index changing compositions. Nishimura, e.g., col. 3, l. 64 to col.
37, l. 54.
The Examiner does not dispute Appellants’ findings that the
chemistries of the compositions employed by Chandross and by Suzuki are
different than the compositions of Nishimura. Br. 5-6 and 8; Ans. 7:4-9.
Discussion
We considered the totality of the record in light of Appellants’
arguments with respect to claims 1, 2, 7, 12, and 26, and the ground of
rejection advanced on Appeal. See, e.g., In re Kahn, 441 F.3d 977, 985-86
(Fed. Cir. 2006) (“‘On appeal to the Board, an applicant can overcome a
rejection by showing insufficient evidence of prima facie obviousness or by
rebutting the prima facie case with evidence of secondary indicia of
nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir.
1998); In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (“After evidence
or argument is submitted by the applicant in response, patentability is
determined on the totality of the record, by a preponderance of evidence
with due consideration to persuasiveness of argument.”) (citing, inter alia, In
re Spada, 911 F.2d 705, 707 n.3 (Fed. Cir. 1990)).
We are of the opinion Appellants have shown that that the evidence in
the combined teachings of Chandross, Suzuki, and Nishimura does not
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support the Examiner’s conclusions of prima facie obviousness with respect
to claims 1 and 16.
We agree with Appellants that, on this record, one of ordinary skill in
this art would not have combined Chandross, Suzuki and Nishimura leading
to the modification of the methods of Chandross and of Suzuki by masking
the core region and exposing the cladding region of the layer merely on
Nishimura’s disclosure that a waveguide can be prepared when the core
region is unexposed. Br. 5-6 and 8. As Appellants point out, Nishimura’s
method is not that of Chandross or of Suzuki, and the Examiner does not
explain why this person would have masked the core region in these
methods, particularly in view of the differences in chemistries as argued by
Appellants. Ans. 7; Br. 5-6 and 8. Thus, the step of patterning the layer
such that the core region is unexposed as required by claims 1 and 16 is not
taught by the combination of references. See above pp. 3-4.
Furthermore, on this record, we agree with Appellants that the
methods of Chandross and of Suzuki do not result in the formation of an
index contrast region by diffusion of uncured monomer from the unexposed
region toward the exposed region during volatilization as required by claims
1 and 16. Br. 4-5 and 7-8. Indeed, in both references, the position of the
uncured monomer in the film is a function of the irradiation step such that
the uncured monomer is only evaporated from the film during the heating
step. See above pp. 4-6. Thus, no reasonable basis appears in either
reference supporting the Examiner’s contention that the formation of an
index contrast region is a “natural consequence” or “natural result” of the
methods of the references. Ans., e.g., 5 and 6.
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Accordingly, in the absence of a prima facie case of obviousness, we
reverse the ground of rejection of appealed claims 1 through 8, 10, 11, and
13 through 32 under 35 U.S.C. § 103(a).
The Primary Examiner’s decision is reversed.
REVERSED

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